IP Bulletin, September 2014Print PDF
The Nutter IP Bulletin provides periodic IP news updates and practical tips
Quit Standing on the Sideline at the USPTO; Consider These Paths to Quicker Allowance
Currently, the average time a patent applicant waits to receive a first Office Action from the United States Patent and Trademark Office (USPTO) is 18.9 months. The total pendency for a patent application before a final disposition is achieved (e.g., Notice of Allowance issued, Request for Continued Examination filed, or application is abandoned) is 27.5 months. This number jumps to 37.9 months when applications in which RCEs are filed are included. These long delays can be frustrating for patent applicants. Start-up companies looking to secure patent protection to attract investors can find this long delay at the USPTO detrimental to the company’s ability to survive. Further, applicants looking to use information from U.S. patent prosecution to make decisions about which countries to enter following the filing of a Patent Cooperation Treaty (PCT) patent application may be left making expensive foreign filing decisions without much information about the likelihood of securing a patent. Fortunately, there are a number of different programs offered by the USPTO that allow patent applicants to significantly advance the pace of patent prosecution.
Nutter’s IP Bulletin How-To Series on Branding
Considering Your Brand during Trademark Prosecution
The articles in our May and July editions of the IP Bulletin addressed eight of the most commonly asked questions that arise when completing a U.S. trademark application filing. Once the application has been filed with the USPTO, substantive examination by an examining attorney from the USPTO will commence in due course. In stark contrast to the long waits experienced by patent applicants, the average time between application filing and the issuance of a first Office Action is only 2.8 months at the time of this publication. There are many reasons why an examining attorney may initially reject a trademark application. When building a brand, an applicant should give special consideration to the response strategy before replying to any Office Action.
The European Patent Office Implements Changes Regarding Lack of Unity in National Phase Applications
On November 1, 2014, the European Patent Office (EPO) will implement a revision to Rule 164 EPC that allows Patent Cooperation Treaty (PCT) applicants to have more than one invention searched when a unity of invention objection is present, regardless of whether the EPO was selected as the International Searching Authority (ISA) during the international phase. Under current practice, if the EPO is not the selected ISA, a supplemental European search report will address only the first invention mentioned in the claims, and any further inventions can only be pursued through divisional practice. Conversely, however, if the EPO is the selected ISA, applicants can request and pay for additional searches before selecting the invention to be pursued.
The new Rule 164 EPC addresses this disparity by allowing applicants to request and pay for additional searches, and select the desired invention for further prosecution, regardless of whether the EPO is the selected ISA. For cases where the EPO was not the ISA, the new rule will apply if the supplementary European search report is created on or after November 1, 2014, while the rule will apply to cases where the EPO was the ISA if an EPO examination communication has not been issued by November 1, 2014.
FDA Releases Draft Guidance Document on Benefit-Risk Analysis for 510(k) Notification
On July 15, the FDA released a draft guidance document on risk-benefit analysis for premarket notification [510(k)] of a new medical device that has different technological characteristics from its predicate device. The draft guidance is nearly identical to the FDA guidance document published on May 28, 2012, which addressed the risk-benefit analysis for medical devices undergoing the pre-market approval (PMA) and de novo pathways. In light of the many similarities between the two guidance documents, in addition to the fact that several of the differences between the guidance documents do not appear to relate to differences between the 510(k) and PMA or de novo pathways, it may make sense for device manufacturers to consider risk-benefit factors listed in both guidance documents when making any type of submission.
Available IPR Data Can Be Misleading
The Leahy-Smith America Invents Act provided for post issuance proceedings, including Inter Partes Reviews (IPR), which allow the Patent Trial and Appeal Board of the USPTO to review issued patents for validity. In the roughly two years that these proceedings have existed, numerous statistics have been compiled, including by the USPTO itself. At first glance, the numbers appear to illustrate a high likelihood of success in filing an IPR, but a deeper look at the data, including data just recently made public by the USPTO on September 16, 2014 and provided in the article, reveals greater ambiguity.
Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property practice group at Nutter McClennen & Fish LLP in Boston. For further information, please contact your Nutter attorney at 617-439-2000.
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